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26th February, 2015

In the case of Dura-Mine Sdn. Bhd. v Elster Metering Limited and George Kent (Malaysia) Berhad, the Federal Court has recently examined the scope and application of Section 42 of the Copyright Act 1987 (hereinafter be referred as “the Act”).

First and foremost, it is appropriate to reproduce Section 42 of the Act here:

42. (1) An affidavit or statutory declaration made before any person having authority to administer oath by or on behalf of any person claiming to be—
(a) the owner of the copyright in any works eligible for copyright under this Act stating that—

  • (i) at the time specified herein copyright subsisted in such work;
  • (ii) he or the person named therein is the owner of the copyright; and
  • (iii) a copy of the work annexed thereto is the true copy thereof; or

(b) the performer in a live performance eligible for performers’ right under this Act stating that—

  • (i) at the time specified therein performers’ right subsisted in such live performance;
  • (ii) he or the person named therein is the performer; and
  • (iii) a copy of the document annexed thereto is the document which proves that he or the person named therein performed in the live performance,

shall be admissible in evidence any proceedings under this Act and shall be prima facie evidence of the facts contained therein.
The purpose of Section 42 is to ease the burden of proving ownership by the copyright owner and shifts the burden to prove otherwise to the defence, as it raises a prima facie evidence of copyright ownership. It is a departure from the best evidence rule.
By way of background, the Respondents (Elster Metering Limited and George Kent (Malaysia) Berhad) filed an action against the Appellant (Dura-Mine Sdn. Bhd.) for alleged infringement of their copyright to six engineering drawings of a rotational water meter known as the Kent PSM water meter. The Respondents alleged that the Appellant caused to be manufactured, imported, and/or offered for sale a water meter that was substantially modelled on the Kent PSM water meter. The trial court found that:

  1. the Kent PSM water meter was of original design,
  2. the infringing water meter was not of original design as it was substantially copied from the Kent PSM water meter,
  3. the Appellant had not rebutted the prima facie evidence that the Respondents had ownership of the said copyright, and
  4. there was infringement of the copyright by the Appellant.

At the Court of Appeal, the Appellant argued that the statutory declaration (hereinafter be referred as “the SD”) filed by the Respondents failed to adhere to the requirements of section 42 in that the drawing annexed to the SD “lacked originality”. By that, the Appellant meant that the drawings annexed to the SD were not original drawings but “modified versions” of the original drawings. Therefore, the “modified versions” annexed to the SD could not provide the prima facie evidence of copyright and, without the original drawings, the court could not judge the originality of the drawings.
The Appellant contended the following before the Federal Court:

  1. that where a statutory provision allows a departure from rules of evidence, it must strictly observed,
  2. that the true copies of the artistic works exhibited by the Respondent were not copies of the original artistic works,
  3. that the subsequent drawings, even if they were substantially same as the original drawings, lacked originality to enjoy copyright protection.

The Federal Court noted that Section 42(1)(a)(iii) of the Act requires a true copy of the work and that there is no requirement for the original copy of the work. The judgement referred to the commentary of Professor Khaw Lake Tee in Copyright Law in Malaysia (3rd Edition). Professor Khaw stated that the copy need not be an exact copy but it must be a copy which is true of all essential particulars for the purpose of Section 42(1)(a)(iii). The Federal Court expressly disagree with the Court of Appeal who held that Section 42 in its present form allows a copyright owner to produce the original and where such drawings are not available, other drawings to prove copyright ownership, which so obliquely suggested that the original is the document to be annexed.
The Court stated that copyright is not limited to the first or the earliest work. The judgement made reference to Copinger and Skone James on Copyright (16th Edition) which noted that revised drawings are entitled to copyright if there has been the addition of some element of material alteration or embellishment which suffices to make the totality of the work an original work. It would be a matter of fact and degree; even an alteration or addition which is quantitatively small may, if material, suffice to create an original work.
The Federal Court also noted an interesting commentary in Copinger and Skone James on Copyright (16th Edition) which is of close resemblance to the facts and arguments in this case. It is necessary to reproduce the paragraph here:
"Generally, however, a defendant can expect to receive short shrift from the court where he attempts to take points about successive versions of work, for example arguing that the earliest works have not been disclosed by the claimant and that the later ones must be unoriginal being copies of the earlier drawings with only insignificant alterations. The reality, as has been pointed out, is that either the later drawings will as a whole be original or, if not, they are evidence of what earlier, and original drawings looked like. Occasionally, however, the point becomes important, for example because the earlier works are no longer entitled to copyright or because the claimant does not own the copyright in the whole chain of works" (Emphasis added).
The Federal Court stated that since the Respondents had given a complete and authenticated account of the chain of ownership of the copyright from the beginning, the Appellant should be given “short shrift from the court” in their attempt to argue that the earliest works had not been disclosed and that the later ones must be unoriginal being copies of the earlier drawings with only insignificant alterations.
The Federal Court strongly expressed that Section 42(1) must be strictly complied with and that an affidavit or SD that does not will not be admissible as prima facie evidence. Nevertheless, the Court also noted that Section 42 is far from being the only means of proving copyright. The Court seem to agree with the pragmatic approach adopted by some courts to allow oral evidence to augment, correct and/or even supplant a defective Section 42 affidavit or SD as oral evidence is open to cross-examination and therefore of higher evidential value.
The appeal was dismissed with costs.